Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: June 16, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DAIMLER NORTH AMERICA CORPORATION, MERCEDES-BENZ USA, LLC,
`AND MERCEDES-BENZ U.S. INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`STRAGENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00457 (Patent 8,566,843 B2)
`Case IPR2017-00458 (Patent 8,209,705 B2)
`
`____________
`
`Before LYNNE E. PETTIGREW, PATRICK M. BOUCHER, and
`CARL L. SILVERMAN, Administrative Patent Judges.
`
`SILVERMAN, Administrative Patent Judge
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`Paper 10
`Date: June 16, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DAIMLER NORTH AMERICA CORPORATION, MERCEDES-BENZ USA, LLC,
`AND MERCEDES-BENZ U.S. INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`STRAGENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00457 (Patent 8,566,843 B2)
`Case IPR2017-00458 (Patent 8,209,705 B2)
`
`____________
`
`Before LYNNE E. PETTIGREW, PATRICK M. BOUCHER, and
`CARL L. SILVERMAN, Administrative Patent Judges.
`
`SILVERMAN, Administrative Patent Judge
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`IPR2017-00457 (Patent 8,566,843 B2)
`IPR2017-00458 (Patent 8,209,705 B2)
`
`
`
`A. GENERAL INSTRUCTIONS
`B2)Patent 7,468,661 B2
`1. Requests for an Initial Conference Call
`
`Unless a party requests otherwise, we will not conduct an initial conference
`
`call as described in the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,765–66 (Aug. 14, 2012). In lieu of such a call, we instruct the parties as
`
`follows:
`
`(1) If a party wishes to request an initial conference call, that party shall
`
`request the call no later than 21 days after the institution of trial;
`
`(2) A request for a conference call shall include: (a) a list of proposed
`
`motions, if any, to be discussed during the call and (b) a list of dates and
`
`times when the parties are available for the call; and
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`(3) The parties shall be prepared to discuss during the initial conference call
`
`their concerns, if any, relating to the schedule in this proceeding as set
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`forth below.
`
`Absent good cause shown, we will not conduct an initial conference call later than
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`30 days after the institution of a trial.
`
`2. Protective Order
`
`A protective order does not exist in this proceeding unless the parties file
`
`one and the Board approves it. We encourage the parties to adopt the Board’s
`
`default protective order if they conclude that a protective order is necessary. See
`
`Default Protective Order, Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,771 App. B (Aug. 14, 2012). If the parties choose to propose a protective order
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`deviating from the default protective order, they must submit the proposed
`
`protective order jointly along with a marked-up comparison of the proposed and
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`default protective orders showing the differences.
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`IPR2017-00457 (Patent 8,566,843 B2)
`IPR2017-00458 (Patent 8,209,705 B2)
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`The Board has a strong interest in the public availability of the proceedings.
`B2)Patent 7,468,661 B2
`We advise the parties that redactions to documents filed in this proceeding should
`
`be limited strictly to isolated passages consisting entirely of confidential
`
`information, and that the thrust of the underlying argument or evidence must be
`
`clearly discernible from the redacted versions. We also advise the parties that
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`information subject to a protective order will become public if identified in a final
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`written decision in this proceeding, and that a motion to expunge the information
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`will not necessarily prevail over the public interest in maintaining a complete and
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`understandable file history. See Office Patent Trial Practice Guide, 77 Fed. Reg. at
`
`48,761.
`
`3. Motions to Amend
`
`Patent Owner may file a motion to amend without prior authorization from the
`
`Board. Nevertheless, Patent Owner must confer with the Board before filing such a
`
`motion. See 37 C.F.R. § 42.121(a). Patent Owner should arrange for a conference
`
`call with the panel and opposing counsel at least one week before DUE DATE 1 in
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`order to satisfy the conferral requirement. We direct the parties to the Board’s
`
`website for representative decisions relating to Motions to Amend among other
`
`topics. The parties may access these representative decisions at:
`
`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp.
`
`4. Discovery Disputes
`
`The panel encourages parties to resolve disputes relating to discovery on
`
`their own and in accordance with the precepts set forth in 37 C.F.R. § 42.1(b). To
`
`the extent that a dispute arises between the parties relating to discovery, the parties
`
`shall meet and confer to resolve such a dispute before contacting the Board. If
`
`attempts to resolve the dispute fail, a party may request a conference call with the
`
`Board and the other party in order to seek authorization to move for relief.
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`IPR2017-00457 (Patent 8,566,843 B2)
`IPR2017-00458 (Patent 8,209,705 B2)
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`In any request for a conference call with the Board to resolve a discovery
`
`dispute, the requesting party shall: (a) certify that it has conferred with the other
`
`party in an effort to resolve the dispute; (b) identify with specificity the issues for
`
`which agreement has not been reached; (c) identify the precise relief to be sought;
`
`and (d) propose specific dates and times at which both parties are available for the
`
`conference call.
`
`5. Depositions
`
`The parties are advised that the Testimony Guidelines appended to the
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012)
`
`(Appendix D), apply to this proceeding. The Board may impose an appropriate
`
`sanction for failure to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For
`
`example, reasonable expenses and attorneys’ fees incurred by any party may be
`
`levied on a person who impedes, delays, or frustrates the fair examination of a
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`witness.
`
`Whenever a party submits a deposition transcript as an exhibit in this
`
`proceeding, the submitting party shall file the full transcript of the deposition rather
`
`than excerpts of only those portions being cited. After a deposition transcript has
`
`been submitted as an exhibit, all parties who subsequently cite to portions of the
`
`transcript shall cite to the first-filed exhibit rather than submitting another copy of
`
`the same transcript.
`
`6. Cross-Examination
`
`Except as the parties might otherwise agree, for each due date—
`
`1.
`
`Cross-examination begins after any supplemental evidence is due.
`
`37 C.F.R. § 42.53(d)(2).
`
`2.
`
`Cross-examination ends no later than a week before the filing date for
`
`any paper in which the cross-examination testimony is expected to be used. Id.
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`IPR2017-00457 (Patent 8,566,843 B2)
`IPR2017-00458 (Patent 8,209,705 B2)
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`7. Motion for Observation on Cross-Examination
`
`A motion for observation on cross-examination provides the parties with a
`
`mechanism to draw the Board’s attention to relevant cross-examination testimony
`
`of a reply witness because no further substantive paper is permitted after the reply.
`
`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`
`2012). The observation must be a concise statement of the relevance of precisely
`
`identified testimony to a precisely identified argument or portion of an exhibit.
`
`Each observation should not exceed a single, short paragraph. The opposing party
`
`may respond to the observation. Any response must be equally concise and
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`specific.
`
`B. DUE DATES
`
`This order sets due dates for the parties to take action after institution of the
`
`proceeding. The parties may stipulate to different dates for DUE DATES 1
`
`through 5 (earlier or later, but no later than DUE DATE 6). A notice of the
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`stipulation, specifically identifying the changed due dates, must be promptly filed.
`
`The parties may not stipulate to an extension of DUE DATES 6 and 7.
`
`In stipulating to different times, the parties should consider the effect of the
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`stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to supplement
`
`evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-examination (37 C.F.R.
`
`§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`
`examination testimony.
`
`1. DUE DATE 1
`
`The patent owner may file—
`
`a.
`
`b.
`
`A response to the petition (37 C.F.R. § 42.120), and
`
`A motion to amend the patent (37 C.F.R. § 42.121).
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`5
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`IPR2017-00457 (Patent 8,566,843 B2)
`IPR2017-00458 (Patent 8,209,705 B2)
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`The patent owner must file any such response or motion to amend by DUE
`
`DATE 1. If the patent owner elects not to file anything, the patent owner must
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`arrange a conference call with the parties and the Board. The patent owner is
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`cautioned that any arguments for patentability not raised in the response will be
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`deemed waived.
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`2. DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and
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`opposition to the motion to amend by DUE DATE 2.
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`3. DUE DATE 3
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`The patent owner must file any reply to the petitioner’s opposition to patent
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`owner’s motion to amend by DUE DATE 3.
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`4. DUE DATE 4
`
`a.
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`Each party must file any motion for an observation on the cross-
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`examination testimony of a reply witness (see section A.8, above) by DUE
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`DATE 4.
`
`b.
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`Each party must file any motion to exclude evidence (37 C.F.R
`
`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by DUE
`
`DATE 4.
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`5. DUE DATE 5
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`a.
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`Each party must file any reply to a petitioner observation on cross-
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`examination testimony by DUE DATE 5.
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`b.
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`Each party must file any opposition to a motion to exclude evidence
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`by DUE DATE 5.
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`6. DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by DUE
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`DATE 6.
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`6
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`IPR2017-00457 (Patent 8,566,843 B2)
`IPR2017-00458 (Patent 8,209,705 B2)
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`7. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE DATE 7.
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`7
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`IPR2017-00457 (Patent 8,566,843 B2)
`IPR2017-00458 (Patent 8,209,705 B2)
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`DUE DATE APPENDIX
`
`DUE DATE 1 ......................................................................September 18, 2017
`
`Patent owner’s response to the petition
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`Patent owner’s motion to amend the patent
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`DUE DATE 2 .....................................................................December 18, 2017
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`Petitioner’s reply to patent owner’s response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3 .......................................................................January 16, 2018
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ........................................................................February 6, 2018
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`Motion for observation regarding cross-examination of reply witness
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`Motion to exclude evidence
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`Request for oral argument
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`DUE DATE 5 .........................................................................February 20, 2018
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`Response to observation
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`Opposition to motion to exclude
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`E DATE 6 .................................................................................February 27, 2018
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`Reply to opposition to motion to exclude
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`DUE DATE 7 ............................................................................March 13, 2018
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`Oral argument (if requested)
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`8
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`IPR2017-00457 (Patent 8,566,843 B2)
`IPR2017-00458 (Patent 8,209,705 B2)
`
`
`
`
`
`PETITIONER:
`
`
`James M. Glass
`jimglass@quinnemanuel.com
`
`Brett N. Watkins
`brettwatkins@quinnemanuel.com
`
`
`
`PATENT OWNER:
`
`Thomas H. Kramer
`tkramer@oeblegal.com
`
`Thomas Meagher
`tmeagher@meagheremanuel.com
`
`
`
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`9
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`
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